Contents

"...obviousness is an attack on a patent based on its
lack of inventiveness. The attacker says, in effect, "Any fool could
have done that." Anticipation, or lack of novelty, on the other hand,
in effect assumes that there has been an invention but asserts that it has
been disclosed to the public prior to the application for the patent.
The charge is: "Your invention, though clever, was already known."

"The test for obviousness is not to ask what competent inventors did or would have
done to solve the problem. Inventors are by definition inventive.

"The classical touchstone for obviousness is the technician skilled in the art but
having no scintilla of inventiveness or imagination; a paragon of deduction and dexterity,
wholly devoid of intuition; a triumph of the left hemisphere over the right. The question
to be asked is whether this mythical creature (the man in the Clapham omnibus of patent
law) would, in the light of the state of the art and of common general knowledge as at the
claimed date of invention, have come directly and without difficulty to the solution
taught by the patent. It is a very difficult test to satisfy."

"While the evidence of experts is, in my view, properly admissible even on an
"ultimate issue" question such as obviousness, it seems to me that it must be
treated with extreme care.

Every invention is obvious after it has been made, and to no one more so than an expert
in the field. Where the expert has been hired for the purpose of testifying, his
infallible hindsight is even more suspect. It is so easy, once the teaching of a patent is
known, to say, "I could have done that"; before the assertion can be given any
weight, one must have a satisfactory answer to the question, "Why didn't you?"

"Since its acceptance, the machine has had an outstanding commercial success, to
the point that, as the trial judge himself said, at p. 5, it "is now almost
universally adopted for use in the press section of paper-making machines".

"...obviousness is an attack on a patent based on its lack of inventiveness. The
attacker says, in effect, "Any fool could have done that." Anticipation or lack
of novelty, on the other hand, in effect assumes that there has been an invention but
asserts that it has been disclosed to the public prior to the application for the patent.
The charge is: "Your invention, though clever, was already known."

"The relevant statutory provision of the purpose of assessing the plea of
anticipation in the present proceedings is para. 28(1)(b) [now s. 27(1)(b)]of the Patent
Act. That paragraph directs an inquiry as to whether the claimed invention is

28(1)(b) ... described in any patent or in any publication printed in Canada or in an
other country more than two years before presentation of the petition...

"The petition which resulted in the issuance of the plaintiff's Canadian patent
was filed November 26, 1973, so the relevant date for the purposes of the present inquiry
is November 26, 1971.

It will be recalled that anticipation, or lack of novelty, asserts that the invention
has been made known to the public prior to the relevant time. The inquiry is directed to
the very invention in suit and not, as in the case of obviousness, to the state of the art
and to common general knowledge. Also as appears from the passage of the statute quoted
above, anticipation must be found in a specific patent or other published document; it is
not enough to pick bits and pieces from a variety of prior publications and to meld them
together so as to come up with the claimed invention. One must, in effect, be able to look
at a prior, single publication and find in it all the information which, for practical
purposes, is needed to produce the claimed invention without the exercise of any inventive
skill. The prior publication must contain so clear a direction that a skilled person
reading the following it would in every case and without possibility of error be led to
the claimed invention. Where, as here, the invention consists of a combination of several
known elements, any publication which does not teach the combination of all the elements
claimed cannot possibly be anticipatory."